Intellectual Property Law

Trade mark registrations for shopping centres

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The UK IPO has issued a new Practice Notice (PAN 01/09) concerning acceptable trade mark specifications for the provision of shopping centre services.

Key points:

• registration can be obtained for both real and ?viritual? (i.e. online) shopping centre services
• the services which are brought together by the centre operated must be clearly defined and related to the primary activity of providing retail outlets, so terms like ?and other services? won?t do. However, the Registry is taking a wideish view of what a shoppinig centre will provide, e.g. language assistance, child care
• such a specification does not include a claim for the provision of the services which are being brought together (e.g. bringing together, inter alia, restaurant services, does not include a claim for the restaurant services themselves)
• the PAN doesn?t cover the bringing together of services in a manner other than a shopping centre ? these will be judged on a case-by-case basis

The IPKat welcomes the IPO?s flexible and realistic approach to what a shopping centre may offer. He?s puzzled though by a couple of things. First, virtual shopping centres are covered, but other forms of bringing together services aren?t. Is there really an accepted definition of what a virtual shopping centre is (and so what falls within the PAN)? What about price comparison sites? Google Shopping? Sites like Nectar which provide links to various shops with the aim of allowing you to collect reward points? Secondly, the PAN requires clearly defined services. Now normally the IPKat is all for clarity, but does it really matter here if the key services is a shopping centre: it?s the bringing together of retail services which will be the main focus when comparing similarity of services, particularly since the PAN explicitly states that any registration would not cover the other services being brought together per se.

Full post as published by IPKat on February 26, 2009 (boomark / email).